Introduction:
Intellectual Property is an intangible property and is the creation of intellect. In general IPR consists of five segments and trademark is one of such five segments. A trademark is basically the face of your business/company and the customers recognizes the goods and services of an entity through its trademark. As the trademark becomes popular among customers, it overall enhances the growth of business/Company. A trademark can be a word, logo, number or combination of words, logo or numeral. The scope of trademark is broad and even extends to sound mark, hologram, packaging and 3D marks.
In Malaysia, the official portal of Intellectual Property Corporation of Malaysia (MyIPO) provides all key information regarding the IPR practice in Malaysia. According to the data provided in the portal, trademark is a sign capable of being represented graphically. The term sign includes “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, color, sound, scent, hologram, positioning, sequence of motion or any combination thereof.” Filing, registration, renewal and other related aspects of trademark are regulated by theTrade Marks Act 1976 and Trade Marks Regulation, 2022. Malaysia adopts the 10th edition of the Nice Classification of Goods and Services, wherein, classes 1 to 34 goods and Classes 35 to 45 deal with services.
Filing of Application[1]:
The application for the registration of the trademark can be filed either through physical mode or online mode. Initially an application with regards to preliminary advice and Search may be made in Form TMA 1 along with a prescribed fee of RM 250 for each class. It is to ensure that the application is as per the prescribed standard and the mark applied for is not already in existence with respect to similar goods and services. Once a satisfactory response is received with respect to the aforesaid application then a proprietor who claim to use the mark or proposes to use the mark may make application to the Registrar for the registration of that mark in the Register. An application shall not be made in respect of goods or services comprised in more than one class. For filing the application without conducting a preliminary search, the fee to be charged is RM 1100 for each class. If the applicant has filed application by adopting from pre-approved list then the fee for filing the application for registration of the trademark is RM 950.
Examination:
The registrar may accept or refuse the application or impose certain amendment in order to accept the mark. In the case of refusal or conditional acceptance the Registrar shall, if required by the applicant, state in writing the grounds of his decision. The registrar may permit the applicant to amend his application within prescribed time. A decision of the Registrar is subject to appeal to the Court.
Advertisement and Opposition:
The registrar shall than advertise the application for registration of trademark and if he so wishes may advertise the application again.Any person may give notice to the Registrar and applicant of opposition to the registration, in writing, within the period of two months for which application is put up for advertisement. As a response to the notice of application so filed, the applicant must send to the Registrar and the opponent a counter‐statement. Both opponent followed by applicant will file their evidences and exhibits post which an opportunity shall be provided to applicant and opponent to file their written submission. The registrar shall now decide whether the application is to be refused or registered. The decision of the registrar is subject to appeal.
Registration:
When an application for registration of a trade mark in the Register has been accepted and the application has not been opposed and the time for opposition has expired; or the application has been opposed and the opposition has been decided in favor of the applicant, the Registrar shall register the trade mark in the Register on payment of the prescribed by issuing a certificate of the registration under the seal of the Registrar. The trade mark so registered shall be registered as of the date of application for registration and that date shall be deemed for the purpose of this Act to be the date of registration.
Conclusion:
Trade mark registration is valid for ten years from the date of application and may be renewed every ten years.
[1] Part V Section 25 of the act.
DUCTUS EDGE 